All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.

Wednesday, December 23, 2015

Takeaway: The Applicant appealed claims to a braking system. The limitation at issue read
"detection of ... rotational engine speed falling below a predetermined minimum." The Examiner relied on this statement in a Japanese reference: "judge whether rotation is beyond a predefined limit." The Applicant argued that the ordinary meaning of "beyond" was more than the limit, where the claim specified "below" the limit. Neither side cited a definition or any other evidence of meaning to a POSITA. The Board summarily agreed with the Applicant, citing to a dictionary definition, and reversed the rejection. (Ex parte Sabelstrom, PTAB 2015.)

The Final Office Action included a copy of Hoshido (in Japanese), along with the corresponding English language abstract.

In the Appeal Brief, the Applicant argued that the Examiner had misinterpreted Hoshido. The Applicant included (in the Evidence Appendix) a machine translation from the JPO, and explained as follows

It appears that [the relied-upon statement in Hoshido] has been construed to correspond to a step of determining that the rotational speed of the engine has fallen below a predetermined value. This is not correct. ...
In paragraph 21 a set of rules, steps 2-5, are defined, which set of rules are used for determining that braking is unnecessary, that is it is determined whether the driving condition is such that no brakes should be applied. ...
In the third condition (4) it is determined whether the engine speed is beyond certain threshold value or not. A normal meaning of beyond is "more than; in excess or over and above"... If the engine is running at low speed, there will be a reason to assume that braking is unnecessary, while if the engine is running a high speed, braking may be assumed to be desired. Thus, "beyond" should be understood to mean that braking is caused to occur when engine speed is above a predetermined value, not below the value.

The Applicant offered this additional context for the teachings of Hoshido:

It should also be noted that the exemplified condition is 900 RPM, a
typical mid-range speed for diesel truck engine. Idling speed would be
around 700 RPM and risk for stall is typically 100 rpm below this. It is
thus clear that the condition tests whether the engine speed is above a
certain threshold value or not.

The Examiner's Answer repeated the same position. The only relevant additional information was this comment on the Applicant's statement about mid-range, idle, and stall speeds: "This explanation is so broad, different type of engine has different range of engine speeds according to manufacture specification."

The Reply Brief included a summary of differences between the claimed invention and the teachings of Hoshido. The Applicant did not further discuss the meaning of "beyond predetermined rotation."

My two cents: One of the few instances in prosecution where the issue really was the teachings of the reference, rather than the meaning of the claims. The Applicant was smart to focus on meaning, though the position would be strengthened by offering evidence rather than a naked assertion.

Notably, it was the Applicant and not the Examiner that provided an English translation of the Japanese language reference. MPEP 706.2(II) that if the Examiner relies on the document itself rather than just the abstract, a translation should be provided.

The Applicant included the translation in the Evidence section of the Appeal Brief. Technically, the Applicant should have submitted this earlier and had the Examiner enter it as evidence. I'm glad to see the Board didn't ding the Applicant on this technicality, especially since the Examiner didn't follow the rules in the first place.

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